692 F.Supp.3d 205
S.D.N.Y.2023Background
- Plaintiff CDC Newburgh is a non‑authorized reseller that sold STM branded cases on Amazon; it alleges the items were authentic but sold off authorized channels.
- Defendant Lienau provides sales/marketing services to STM and, acting for itself and as STM’s agent, submitted Amazon reports alleging Plaintiff’s listings were counterfeit, causing removal of ten listings.
- Plaintiff sued Lienau and STM for defamation, tortious interference with prospective business relations, declaratory judgment of non‑infringement, and common‑law unfair competition; STM counterclaimed for federal and state trademark infringement, false advertising, unfair competition, and dilution.
- Lienau moved to dismiss the Amended Complaint and to add an anti‑SLAPP counterclaim; Plaintiff moved to dismiss STM’s counterclaims.
- The Court: granted Lienau’s motion and dismissed all claims against Lienau (denying the anti‑SLAPP counterclaim as inapplicable in federal court); granted in part and denied in part Plaintiff’s motion re: STM counterclaims — federal trademark, false advertising, and federal unfair competition survive; New York trademark and trademark dilution dismissed.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Are Lienau’s Amazon reports actionable defamation? | Reports falsely stated products were counterfeit (statements of fact). | Statements were opinion/hypothesis and thus nonactionable. | Reports are expressions of opinion; defamation claim dismissed. |
| May Lienau add an anti‑SLAPP counterclaim under NY law in federal court? | NY anti‑SLAPP does not apply in federal court; conflicts with FRCP. | NY anti‑SLAPP protects speech on public‑interest matters. | Denied; New York anti‑SLAPP inapplicable in federal court. |
| Do the reports support tortious interference with prospective business relations? | Reports caused Amazon to remove listings and thus interfered with Plaintiff’s relationship with Amazon. | Removal of listings and ‘‘black marks’’ do not show injury to the underlying business relationship; no improper purpose pleaded. | Dismissed for failure to plausibly allege wrongful interference and injury. |
| Should the Court grant declaratory judgment of non‑infringement? | Plaintiff seeks a declaration that Products are not counterfeit and do not infringe STM marks. | Court should decline declaratory relief; dispute is factual and declaratory relief won’t resolve core harms. | Denied; court declines to exercise declaratory jurisdiction under Admiral factors. |
| Do STM’s counterclaims (federal trademark, false advertising, unfair competition, state trademark, dilution) survive? | Plaintiff contends claims fail (vague, first‑sale defense, no consumer confusion, insufficient fame). | STM alleges use in commerce, likely confusion, literal falsity re: STM Warranty, and reputational/economic injury. | Federal trademark, false advertising, and federal unfair competition survive; New York common‑law trademark (no bad faith pleaded) and TDRA dilution (marks not pleaded as sufficiently famous) dismissed. |
Key Cases Cited
- Ashcroft v. Iqbal, 556 U.S. 662 (2009) (pleading must state a plausible claim; legal conclusions need factual support)
- Bell Atlantic Corp. v. Twombly, 550 U.S. 544 (2007) (plausibility standard for complaints)
- Chambers v. Time Warner, Inc., 282 F.3d 147 (2d Cir. 2002) (when courts may consider extrinsic documents integral to the complaint)
- Lexmark Int'l, Inc. v. Static Control Components, Inc., 572 U.S. 118 (2014) (Lanham Act standing requires injury to commercial interest in reputation or sales and proximate causation)
- Time Warner Cable, Inc. v. DIRECTV, Inc., 497 F.3d 144 (2d Cir. 2007) (literal falsity and the false‑by‑necessary‑implication doctrine in false advertising claims)
- Gross v. New York Times Co., 82 N.Y.2d 146 (1993) (distinguishing protected opinion from actionable statements of fact in defamation law)